World Trademark Review

Legal Updates

High Court provides guidance on admissibility of new evidence on appeal from registrar

The decision of the High Court of England and Wales in Consolidated Developments Ltd v Cooper demonstrates the relatively restrictive approach which the court takes to the admission of new evidence.

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MISS EARTH case: ex parte injunction vacated as plaintiff suppressed material facts

An Indian court has vacated an ex parte injunction preventing the defendants from using the mark MISS EARTH as a title in respect of a beauty pageant.

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Court of Appeal provides salutary lesson to mark owners who license their trademark portfolios

The decision of the Court of Appeal of England and Wales in Holland and Barrett v General Nutrition provides valuable guidance for mark owners who license their main brand as well as a number of sub-brands.

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High Court Sony decision: are well-known marks really protected?

In a decision that "may be a shock to many", the Kenyan High Court has held that Sony Corporation had failed to prove that its SONY mark was a well-known mark in Kenya.

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Chaos as PTO imposes overly strict power of attorney requirements

New power of attorney requirements imposed by the Patent and Trademark Office (PTO) have caused administrative chaos in Bolivia. Following intervention by the Ministry of Economic Development, the PTO is now having to backtrack.

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Anti-sanction bill keeps intellectual property in safe harbour

A new anti-sanction bill aimed at the prevention and suppression of unlawful and hostile foreign actions is now in force in Russia. Importantly, the bill generally does not concern the IP assets of foreign legal entities.

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High Court: notices of discontinuance may be set aside in certain circumstances

In a dispute over the mark GIORDANO, the High Court of England and Wales has held that, in certain circumstances, notices of discontinuance can be set aside.

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Amendments to Industrial Property Law due to come into force - key features explained

Earlier this year, the Mexican Senate approved a decree which introduced significant amendments to the Industrial Property Law. This update highlights the key changes introduced by the decree, which is due to come into force on 10 August...

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General Court: CAVE DE TAIN does not evoke PDO 'Cava'

In a decision that provides valuable guidance on the concept of 'evocation' of a PDO, the EU General Court has confirmed that the trademark CAVE DE TAIN, which covers wines in Class 33, was not an evocation of the PDO 'Cava'.

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Cancellation of marks: Ministry of Economy's practices in implementing Trademarks Law create challenges

The Ministry of Economy’s interpretation of the provisions of the UAE Trademarks Law relating to the cancellation of trademarks has created challenges for mark owners and cancellation applicants.

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Mark owners beware: trademarks slipping through the cracks of loose corporate structures and corporate governance

Two recent decisions of the South African Supreme Court of Appeal highlight the dangers to trademark owners, from a proof of use perspective, in not setting up their corporate structures properly.

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Rush to register French football star Mbappé's name highlights China's rampant trademark squatting problem

The rush to register Kylian Mbappé’s name following the 2018 FIFA World Cup serves as an important reminder that celebrities and businesses should have a strategy in place to protect their marks in China.

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TTAB finds sales to single customer, although not substantial, sufficient to avoid abandonment of MOMBACHO for cigars

The US Trademark Trial and Appeal Board has dismissed a petition for cancellation of the mark MOMBACHO for cigars, rejecting the contention that the respondent's meager sales did not qualify as bona fide...

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New INPI resolution on administrative opposition procedure - what you need to know

Following the introduction of major changes to Argentina’s trademark legislation in January, the National Institute of Industrial Property has now issued Resolution P-183, which regulates the administrative opposition procedure.

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Intellectual Property Enterprise Court explores limits of extended passing-off doctrine

In a dispute over the use of the term ‘mutual’, the Intellectual Property Enterprise Court in London has dismissed Military Mutual's passing-off claim against Police Mutual.

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Success for Vogue owner as application for figurative V.O.G.U.E. mark is refused

The Croatian IP Office has upheld an opposition filed by Advance Magazine Publishers, the owner of the mark VOGUE GIRL, against the registration of the figurative mark V.O.G.U.E. BY MIRJANA SMOLJO.

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Dispute between Dunlop and Goodyear highlights importance of maintaining control over use of marks

In Dunlop v Goodyear, the Federal Court of Australia has considered a dispute over the use and registration of the mark DUNLOP and the 'flying D' device mark.

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New IP officials appointed against backdrop of great uncertainty

New IP officials, including a new director of trademarks, have recently been appointed in Venezuela. These appointments come in a climate of great uncertainty, mainly due to the suspension of the payment of official fees by foreign IP owners earlier this year...

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Draft regulations on corporate names issued for public consultation: key points highlighted

China’s General Administration for Market Regulation has issued a set of draft regulations on the registration of company names for public consultation. This update highlights several noteworthy features of the draft regulations.

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New presidential government system brings changes to Patent and Trademark Office's legal framework

The adaptation of the Patent and Trademark Office to Turkey’s new presidential government system created uncertainty as to the legal basis for the office’s existence. However, Presidential Decree No 4 has now re-established...

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3D shape mark rejected for technical function

The hearing officer has rejected an application to register a 3D mark in the UK based on the shape's technical function, highlighting the clear public interest of preventing the unjustifiable extension of patent rights.

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Coca-Cola victory as Federal Court refuses to register colour green for energy drinks

In opposition proceedings between Coca-Cola and Frucor, the Federal Court of Australia has confirmed that Frucor could not register a particular shade of the colour green as a mark for energy drinks.

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General Court: consumers usually recognise wine by reference to word element

The EU General Court has confirmed that there was a likelihood of confusion between the word mark ANTONIO RUBINI and the earlier figurative mark RUTINI, which both covered wine.

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Why it is very difficult to recover domain name consisting of three-letter acronym under UDRP

A UDRP panel has refused to order the transfer of a domain name consisting of a three-letter acronym without addressing whether the complainant had unregistered trademark rights under the same acronym.

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Namibia introduces new Industrial Property Act – what you need to know

Namibia’s new Industrial Property Act will come into operation on 1 August 2018. This update highlights the most noteworthy changes concerning trademarks.

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UK government White Paper on future UK-EU relationship: small number of IP issues considered

The UK government’s White Paper on the future UK-EU relationship includes a limited number of proposals relating to intellectual property. Among other things, the United Kingdom will establish its own GI scheme.

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CJEU dismisses Jägermeister's appeal in RCD application dispute

The decision of the Court of Justice of the European Union in Jägermeister v EUIPO highlights the strict standard in relation to the representation requirements in applications for registered Community designs.

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Court of Appeal upholds criminal sentence for import of counterfeit t-shirts bearing registered trademarks

The Court of Appeal of Zaragoza in Spain has upheld a judgment of the Trial Court in which the latter had sentenced the defendants for importing thousands of counterfeit t-shirts from China.

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Full Federal Court considers nature of appellate review in cases involving evaluative assessments

In Aldi Foods v Moroccanoil, the Full Federal Court of Australia has considered the approach that should be adopted when it is called upon to consider mixed questions of fact and law.

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Beware of RDNH: UDRP panel finds that complainant deliberately filed complaint without proper basis

A UDRP panel has denied the transfer of a domain name that matched the complainant’s trademark and declared that the complaint constituted an abuse of the UDRP proceeding.

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Issue 74
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